Examining patent applications at the IPO

The IPO has recently reviewed its approach to examining patents to ensure that it continues to provide a quality, consistent and cost-effective examination under the Patents Act 1977.

We have sought to ensure that any objections that we raise have a solid foundation in the law and are appropriate and necessary to the case in hand. We have also considered feedback received suggesting that, at times, objections raised are minor or unfounded.

As a result, the IPO has updated the Manual of Patent Practice (MoPP) to emphasise the importance of examiners looking at applications through the eyes of the skilled person who is trying to understand the invention.

The IPO will continue to search all claims, independent and dependent, in an application, unless there are clear reasons not to do so, in which case what has been searched and the reasons why will be made clear.

Examiners will continue to examine all the claims, and objection will be raised when the issue genuinely makes the scope of the claims unclear or means that the claims lack the required support. Minor imperfections, which do not create this lack of clarity or support, will not be objected.

Parts of the application such as statements of invention, boilerplate clauses and minor inconsistencies or typographical errors, will not be objected to unless they affect the clarity of the independent claims. Similarly, embodiments which clearly fall outside of the claims and therefore do not cast doubt on the scope of the claims will also not be objected to.

The IPO will object to conflict between two or more patent applications only where the scope of the independent claims is considered to conflict; this covers both the situation where respective applications contain independent claims explicitly including all the same features and where the independent claims differ in their wording, but their scope does not differ in substance.

The approach will ensure that all IPO examiners adopt a consistent approach across all technology areas.

None of this affects the applicants’ right to make voluntary amendments as previously allowed.

Date Published: 15 March 2020

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